In a decision delivered on the 19th of September, Justice Sanjeev Sachdeva of the Delhi High Court formalized an injunction that had been granted to 3M in 2014 in 3M Innovative Properties Ltd. v. Venus Safety and Healthcare Pvt. Ltd. (read the order here). The injunction prevents Venus from manufacturing medical/surgical masks that allegedly infringe 3M’s patent. The patent in dispute is for such a mask, or more specifically a “Flat Fold Personal Respiratory Protection Device” and the process to prepare it, granted to 3M in 1999.
Venus began to sell masks that allegedly infringed on 3M’s patent, against which 3M obtained an interim injunction in 2013. In 2014 however, a Single Judge Bench vacated said injunction. By an interim order passed in 2015, the operation of the injunction was put back into place. This is what lead to the present suit. The decision examines past decisions on patentability, as well as compares the prior art as put forward by Venus before formalizing the previously granted injunction.
3M’s Claims were for: “(i) A non-pleated main body divided into three portions; (ii) Two lines of demarcation separating the mask into three portions; (iii) A bisecting fold extending vertically across the main body; (iv) Lines of demarcation that do not include and are not part of a pleat; (v) Mask is made from a monolithic preform blank of material, thereby making manufacturing process easier.” The technical advancements that were shown in the patent were that the lines of demarcation had a joint like function, formed two axes of rotation, and prevented delamination; apart from the mask having “off-the-face” benefits to the user.
Prior Art Analysis
As contended by Venus, they had been manufacturing the masks since 1994. They further argued that the three cited patents served as prior art, and were obvious to a person skilled in the art; and therefore claimed that 3M was not entitled to such an injunction. In order to arrive at his decision, Justice Sachdeva examined the Supreme Court’s 1979 case –Bishwananth Prasad Radhey Shyam v. Hindustan Metal Industries. He highlighted important sections of the holding to summarize the principles that govern the patentability of an invention. The prior art put forth was as follows:
The Single Judge had vacated the injunction in 2014 on the ground that US Patent No. 3,971,369 served as prior art for the lines of demarcation used as guiding and reference lines to locate the center of the single part nose piece, and would facilitate the folding of the device. It was the primary contention of 3M that the Single Judge erred in coming to this conclusion, and that the lines of demarcation in the US patent had been incorrectly construed to be the same as in the subject patent. They argued that the Judge had not appreciated the technical advances made in the present patent, mistaking inventive steps to be existing knowledge.
Other prior art that were brought up were US Patent No. 5,701,892 and US Patent No.US 6,394,090. Both were dismissed as not being prima facie prior art, as they did not ‘teach’ the elements of the patent at hand. Justice Sachdeva concluded that the Single Judge had erroneously combined the abstracts of the three named patents to “arrive at a conclusion that the three combined [patents] teach the elements of the subject patent”. He additionally clarified that based on the alleged prior art as relied on by Venus, a person ordinarily skilled in the art would not be able to reach the solution provided by the subject patent without use of inventive ingenuity. It must however be kept in mind that the present order is again, interim in nature – and is binding until the final disposal of the suit.